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  • 8/4/2019 Facebook Teachbook






    FACEBOOK, INC., ))

    Plaintiff, ) No. 11-cv-3052


    v. )




    Defendant. )



    MARVIN E. ASPEN, District Court Judge:

    Plaintiff Facebook, Inc. (Facebook) has filed an eight-count complaint against

    Defendant Teachbook.com LLC (Teachbook) alleging trademark infringement, trademark

    dilution, and related federal and state claims. (Compl.) Teachbook moves to dismiss the

    complaint for failure to state a claim upon which relief can be granted. (Mot. & Mem.)

    Teachbooks motion is denied.


    As is always the case with motions to dismiss under Rule 12(b)(6), we look to the

    complaint and any supporting exhibits for the facts upon which to evaluate the motion. In this

    case, Facebook has filed a fifteen-page complaint and five accompanying exhibits. Normally at

    this stage, these materials would provide the sum total of the relevant facts for evaluating

    Teachbooks motion to dismiss. But in support of its motion to dismiss, Teachbook has

    proffered over 300 pages of additional material that it would like us to consider. Thus, after first


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    setting out the allegations Facebook makes in its complaint and supporting exhibits, we then

    determine whether Teachbooks additional material ought to be considered in evaluating the

    current motion.

    A. Facebooks Complaint

    Facebook is a Delaware corporation with its principal place of business in Palo Alto,

    California. (Compl. 1.) Since its founding in 2004, Facebook has risen to prominence through

    its provision of a social networking website and related services. (Id. 6, 1011.) Teachbook

    is a Delaware limited liability company with its principal place of business in Northbrook,

    Illinois. (Id. 2.) Teachbook maintains a social networking website targeted specifically at

    teachers. (Id. 12.)

    Facebook is suing Teachbook for infringement of Facebooks claimed statutory and

    common law trademark rights in FACEBOOK and related marks. (Id. 78, 2474.)

    Facebook has been continuously using the FACEBOOK mark since February 2004 and now

    owns multiple United States Patent and Trademark Office (USPTO) registrations for it. (Id.

    68 & Ex. A.) Facebook alleges that, as a result of the nature and quality of Facebooks

    services, its widespread use of the FACEBOOK Marks, Facebooks enormous and loyal use

    base, its numerous trademark registrations and pending applications, and other factors, the

    FACEBOOK Marks are famous[.] (Id. 10.)

    Facebook accuses Teachbook of trading on the fame the FACEBOOK mark has

    achieved. (Id. 28.) According to the complaint, Teachbooks website has contained the

    following statement at various times:

    Many schools forbid their teachers to maintain Facebook and MySpace accounts because

    of the danger that students might learn personal information about their teachers. With


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    Teachbook, you can manage your profile so that only other teachers and/or school

    administrators can see your personal information, blogs, posts, and so on. Teachbook is

    all about community, utility, and communication for teachers.

    (Id. 13.) Based on this statement, Facebook contends that Teachbook is touting itself as a

    substitute for Facebook. (Id.)

    Although Teachbook applied to register its TEACHBOOK mark with the USPTO on

    an intent-to-use basis on March 16, 2009, Facebook has opposed this application. (Id. 14.)

    Facebook asserts that the TEACHBOOK mark is substantially similar to its FACEBOOK mark.

    (Id. 15.) Facebook further claims that the services Teachbook offers under the TEACHBOOK

    mark are the same as and/or related to some of the services provided by Facebook. (Id. 16.)

    In Facebooks view, Teachbooks use of the TEACHBOOK mark also creates a false

    suggestion of an affiliation or connection between [Teachbook] and Facebook, where none

    exists. (Id. 17.) Notably, Facebook contends that Teachbook adopted its TEACHBOOK

    Mark with the intention of causing confusion with, and trading on the goodwill of, the

    FACEBOOK Marks. (Id. 18.)

    Based on these allegations, Facebook initially filed suit against Teachbook in the

    Northern District of California on August 18, 2010. (Id. 20.) That case was dismissed for lack

    of personal jurisdiction over Teachbook, however, on May 3, 2011. (Id. 22.) Facebook

    subsequently filed this suit against Teachbook here in the Northern District of Illinois on May 6,

    2011. (Dkt. No. 1.)

    B. Teachbooks Exhibits

    In addition to these allegations in Facebooks complaint, which we accept as true,

    Teachbook has offered over 300 pages of exhibits in support of its motion to dismiss.


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    Teachbook claims that these materials are all either referenced in Facebooks complaint or

    public records subject to judicial notice. (Mem. at 56.) Thus, we must address the threshold

    issue of whether these materials are properly considered in conjunction with Teachbooks

    motion to dismiss.

    In addition to the allegations in the complaint, courts are free to examine documents

    incorporated into the complaint by reference, and matters of which a court may take judicial

    notice in evaluating a motion to dismiss under Rule 12(b)(6). Tellabs, Inc. v. Makor Issues &

    Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 2509 (2007); Thompson v. Illinois Dept of

    Professional Regulation, 300 F.3d 750, 753 (7th Cir. 2002); Henson v. CSC Credit Servs., 29

    F.3d 280, 284 (7th Cir. 1994). But besides this limited class of materials, Rule 12(d) mandates

    that [i]f, on a motion under Rule 12(b)(6) or 12, matters outside the pleadings are presented to

    and not excluded by the court, the motion mustbe treated as one for summary judgment under

    Rule 56. Fed. R. Civ. P. 12(d) (emphasis added). When a court converts a motion to dismiss to

    one for summary judgment, [a]ll parties must be given a reasonable opportunity to present all

    the material that is pertinent to the motion. Id.

    The question here, then, is whether the materials Teachbook has presented are either

    incorporated into the complaint by reference or subject to judicial notice. Tellabs, 551 U.S.

    at 322, 127 S.Ct. at 2509. If they are, then we may properly evaluate them under Teachbooks

    Rule 12(b)(6) motion. If they are not, then we can only evaluate them, if at all, after converting

    Teachbooks motion to dismiss to a motion for summary judgment and allowing Facebook an

    opportunity to present any pertinent material. Fed. R. Civ. P. 12(d). We first consider the


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    materials that Teachbook contends are subject to judicial notice, followed by those that

    Teachbook contends are referenced in the complaint.

    1. Judicial Notice

    Seven of Teachbooks ten exhibits are materials that it contends are subject to judicial

    notice. These exhibits consist of a filing Facebook made with the European trademark authority

    (Mem., Ex. B.); USPTO records pertaining to trademark registrations belonging to Facebook and

    others (Id., Exs. CG); and dictionary definitions (Id., Ex. H.). Regarding Facebooks European

    filing and the USPTO records, Teachbook maintains that these documents are matters of public

    record of which we can take judicial notice. (Mem. at 5.) Teachbook also cites Seventh Circuit

    authority for the consideration of dictionary definitions in trademark cases. (Id. at 6.)

    Teachbook relies on these documents to argue that Facebook has judicially admitted facts

    which undercut its entire complaint and that Facebook cannot rely on the suffix -BOOK to

    maintain its trademark claim against Teachook. (Mem. at 913.)

    Teachbook places particular emphasis on Facebooks filing with the European trademark

    authority. (Mem. at 911.) In that filing, Facebook was replying to objections raised by a

    Spanish holder of the trademark FACTBOOK to Facebooks attempt to register

    FACEBOOK as a trademark. (Mem., Ex. B. at 1.) Facebook argued that the aural and

    conceptual differences between the marks counteract any existing similarity between them, and,

    as such, likelihood of confusion . . . can be clearly excluded. (Id. at 6.) Teachbook urges that

    this statement and others made in the same document are fatal to Facebooks complaint in this

    case. (Id. at 9.)


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    Facebook responds that the evidentiary value of Teachbooks proffered documents are

    subject to reasonable dispute, which precludes consideration of them at this stage. (Resp. at

    56.) Facebook also challenges Teachbooks position that its filing with the European trademark

    authority is a judicial admission, because the filing was not made in the present litigation. (Id.